Xerox Corporation

Patent Trials and Appeals Board

Aug 11, 2021

2020004112 (P.T.A.B. Aug. 11, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/630,185 06/22/2017 Chu-Heng Liu 20170329US01 9912
75931 7590 08/11/2021
Basch & Nickerson LLP
1844 Penfield Road, Suite 1
Penfield, NY 14526
EXAMINER
TAVLYKAEV, ROBERT FUATOVICH
ART UNIT PAPER NUMBER
2896
NOTIFICATION DATE DELIVERY MODE
08/11/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@bnpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHU-HENG LIU, PATRICK JUN HOWE, and
DAVID C. CRAIG
Appeal 2020-004112
Application 15/630,185
Technology Center 2800

Before TERRY J. OWENS, LINDA M. GAUDETTE, and LILAN REN,
Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s decision rejecting claims 1–12 and 21–24. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm in part.

1 The following documents are of record in this appeal: Specification filed
June 22, 2017 (“Spec.”); Final Office Action dated May 29, 2019 (“Final
Act.”); Appeal Brief filed December 11, 2019 (“Appeal Br.”); Examiner’s
Answer dated April 13, 2020 (“Ans.”); and Reply Brief filed May 12, 2020
(“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). The
Appellant identifies the real party in interest as Xerox Corporation. Appeal
Br. 2.
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Application 15/630,185

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CLAIMED SUBJECT MATTER
The invention relates to a system for image specific illumination of an
image printed on an optical waveguide. Title of the Invention. Glass or
acrylic sheets are examples of transparent materials conventionally used as
optical waveguides for optical total internal reflection. Spec. ¶ 1. “[T]otal
internal reflection can be ‘frustrated’ on an image-wise basis by
engraving marks in the surface of the optical medium (optical waveguide) so
that the internally reflecting light partially externally refracts and escapes the
optical waveguide.” Id. ¶ 2. “The effect of this type of imaging is striking
since the light seems to originate in the engraved images . . . .” Id. ¶ 3.
Disadvantages of prior art optical waveguide display devices include that the
images are monochromatic, engravings are limited to line art, and the optical
waveguide is not reusable. Id. ¶¶ 5, 8, 9. According to the Specification, the
inventive display device overcomes these disadvantages. See id. ¶¶ 10–13.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A display device component comprising:
an optical waveguide for providing total internal
reflection of light travelling within said optical waveguide, said
optical waveguide having a first surface and a second surface,
said first surface being associated with a first viewable side of
said optical waveguide, said second surface being associated
with a second viewable side of said optical waveguide;
a first marking material formed, in an image-wise
manner, directly on said first surface of said optical waveguide
to create a plurality of first image regions having said first
marking material, said first marking material having light
scattering properties to overcome the total internal reflection of
light travelling within said optical waveguide such that a first
portion of the light travelling within said optical waveguide and
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passing into said first marking material is emitted from said
first marking material in a direction away from said first surface
of said optical waveguide and a second portion of the light
travelling within said optical waveguide and passing into said
first marking material is emitted from said first marking
material in a direction toward said first surface of said optical
waveguide, said plurality of first image regions being viewable
from said first viewable side of said optical waveguide, said
plurality of first image regions being viewable from said second
viewable side of said optical waveguide; and
a second marking material formed, in an image-wise
manner, directly on said second surface of said optical
waveguide to create a plurality of second image regions having
said second marking material, said second marking material
having no light scattering properties to overcome the total
internal reflection of light travelling within said optical
waveguide, said plurality of second image regions being only
viewable from said second viewable side of said optical
waveguide, said plurality of second image regions being not
viewable from said first viewable side of said optical
waveguide, said plurality of second image regions being only
viewable when said second portion of the light passing into said
first marking material is emitted from said first marking
material in a direction toward said first surface of said optical
waveguide passes through said plurality of second image
regions;
said plurality of first image regions including,
a first subset of said plurality of image regions
having a first density of said first marking material, and
a second subset of said plurality of image regions
having a second density of said first marking material;
said first density of said first marking material not being
equal to said second density of said first marking material to
create areas of different brightness on said first surface of said
optical waveguide.
Appeal Br. 46–47 (Claims App.) (emphases added).
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REFERENCES
Name Reference Date
Hill US 4,673,609 June 16, 1987
Brychell US 7,762,704 B2 July 27, 2010
Kelly US 8,033,706 B1 Oct. 11, 2011
Minami US 8,876,349 B2 Nov. 4, 2014
Liu US 10,082,460 B1
(claim 13)
Sept. 25, 2018

REJECTIONS
1. Claims 1–3 are rejected under 35 U.S.C. § 103 as unpatentable
over Hill, Minami, and Brychell.
2. Claims 4–12 and 21–24 are rejected under 35 U.S.C. § 103 as
unpatentable over Hill, Minami, Brychell, and Kelly.
3. Claims 1–12 are rejected on the ground of nonstatutory double
patenting as unpatentable over claim 13 of US 10,082,460 B1 in view of
Brychell.
OPINION
In summarizing the subject matter of the independent claims, the
Appellant cites primarily to Figure 16 and corresponding description of the
Figure 16 embodiment. See Appeal Br. 3–9; see also Final Act. 2 (indicating
that during a May 20, 2019 interview, the Appellant’s attorney “stated that
the amended claims defined the embodiment in Fig. 16 and described at least
at para. 0124–0133”3). Figure 16 is reproduced below.

3 The Appellant does not challenge the Examiner’s statement. See generally,
Appeal Br.
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“Figure 16[, reproduced above,] illustrates an optical waveguide
display system, wherein an optical waveguide 10, when illuminated by a
light source 20, displays images printed on both sides of the optical
waveguide 10.” Spec. ¶ 124. Front and back side images are printed on
optical waveguide 10’s front and back surfaces using marking material 50
and white marking material 45, respectively. Id. ¶¶ 125–126. When
illuminated by light source 20, the back side image, created with white
marking material 45, is viewable with viewers 30, 31 which face optical
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waveguide 10’s front and back surfaces, respectively. Id. ¶ 130. The front
side image may be a color image without a white background. Id. ¶ 128.
When the front image and the back image are assembled together, the front
side image becomes visible only with viewer 30 and only when the backside
image (white marking material 45) provides the scattering light. See id.
¶¶ 127, 129.
The Examiner found that Hill Figure 17 discloses a display device
component as recited in claim 1, see generally Final Act. 4–12, except for
explicit disclosures of a first image pattern having a non-uniform density, id.
at 9, and a second image pattern “illuminated only by light scattered from
the optical waveguide by a material disposed on a surface thereof,” id. at 5.
The Examiner found that the ordinary artisan would have formed Hill’s first
image pattern with varying densities based on Brychell’s disclosure. See id.
at 9–12. The Appellant does not dispute the Examiner’s findings as to the
Hill-Brychell combination. See Appeal Br. 16.
As to the claim recitation requiring that the second image is viewable
only when illuminated by scattered light from the first marking material, the
Examiner found that the ordinary artisan would have understood that
a plurality of second image regions 25 (formed of a transparent
colored material: Fig. 6A; 7:23–25 of Hill) can be illuminated
only by light scattered by the first material 14 (e.g., white ink;
e.g., 16:40–45 of Hill) backwardly into the optical waveguide,
out of it, and subsequently through the plurality of second
image regions 25, as explicitly illustrated by Minami.
Final Act. 6.
The Appellant argues that in reaching a conclusion of obviousness,
the Examiner misread and took various disclosures in Hill out of context.
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See generally Appeal Br. 10–16; Reply Br. 2–6. We agree based on the cited
evidence and explanation in the Appeal and Reply Briefs. We add the
following.
The Examiner cites Hill column 1, lines 5–8, as evidence that Hill’s
“core teachings/goal” is “to produce an image pattern that is visible from
both viewable sides or only from one viewable side.” Ans. 5. Hill column 1,
lines 5–8 read as follows: “This invention relates to panels and more
particularly transparent or translucent panels having a design or pattern
visible from at least one side and not the other.” The plain meaning of this
language is that a design or pattern must be visible from one side of a panel,
but cannot be visible from the other side. We disagree with the Examiner’s
reading of this language as meaning that the same image can be viewable
from both sides of the panel. Moreover, the Examiner’s understanding of
this language is inconsistent with Hill’s disclosure as a whole. See, e.g., Hill
21:49–54 (“The products of the invention have a wide variety of
uses. A principal application is in circumstances where a design, such as
information, an advertisement or other indicia is to be visible from one side
of a panel and not visible from the other side, this being coupled, if desired,
with one-way vision.”); 23:28–40.
The Examiner cites Hill Figures 6, 26, and 32 as evidence that Hill
provides “a great number of design choices” and selecting two marking
materials as claimed—the first viewable through both sides of a panel and
the second viewable from only one side and only when illuminated by light
emitted from the first marking material— would have been obvious. Final
Act. 6–7. However, Hill describes each of the Figure 6, 26, and 32 images as
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visible from one side, but not the other. See Hill 7:23–51, 20:19–53; 21:34–
48.
In sum, for the reasons stated above and in the Appeal and Reply
Briefs, the record evidence does not support the Examiner’s determination
that one of ordinary skill in the art would have had a reason to modify Hill to
include two marking materials as claimed, i.e., the first viewable through
both sides of a panel and the second viewable from only one side and only
when illuminated by light emitted from the first marking material.
As the Examiner relies on the same unsupported fact finding in
rejecting each of the independent claims (claims 1, 5, 9, 21, and 23), see
Final Act. 4–14, we do not sustain the Section 103 rejections of claims 1–12
and 21–24.
Because the Appellant does not argue the obviousness-type double-
patenting rejection of claims 1–12, see Reply Br. 6, we sustain that ground
of rejection.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3 103 Hill, Minami,
Brychell
1–3
4–12, 21–
24
103 Hill, Minami,
Brychell, Kelly
4–12, 21–
24
1–12 Nonstatutory
Double Patenting
US 10,082,460 B1
(claim 13),
Brychell
1–12
Overall
Outcome
1–12 21–24
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART